Port-a-Pour, Inc. v. Peak Innovations, Inc. et al

Filing 207

ORDER that Plaintiffs requests in its Notice of Withdrawal of Patent Infringement Claims and Election to Proceed to Trial ECF No. 205 to dismiss the patent infringement with prejudice and proceed to trial on May 4, 2015, are DENIED. It is FURTHER ORDERED that the eight day jury trial set to commence on May 4, 2015 and the Final Trial Preparation conference set April 16, 2015, at 11:00 a.m. are VACATED. Finally, it is ORDERED that the parties are directed to contact Magistrate Judge Wang by Monday, March 16, 2015, for a scheduling conference regarding the patent claims, by Judge Wiley Y. Daniel on 3/9/2015. (evana, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Senior Judge Wiley Y. Daniel
Civil Action No. 13-cv-01511-WYD-NYW
PORT-A-POUR, INC., a Colorado corporation,
Plaintiff,
v.
PEAK INNOVATIONS, INC., a Colorado corporation, and
MARK E. NELSON, an individual
Defendants and Counter Claim Plaintiffs
v.
PORT-A-POUR, INC. a Colorado corporation;
JEROME J. DOHERTY; and
NEIL G. OBERG, individuals,
Counter Claim Defendants.

ORDER

THIS MATTER is before the Court on a review of the Plaintiff’s Notice of Withdrawal
of Patent Infringement Claims and Election to Proceed to Trial on May 4, 2015 (ECF No.
205) and Defendants’ Response to Plaintiff’s Motion to Dismiss Patent Claims filed March
6, 2015 (ECF No. 206). Plaintiff’s Notice seeks to withdraw the patent infringement claims
that I previously indicated were not properly developed, and to proceed to trial on the
scheduled trial date of May 4, 2015. Plaintiff also seeks to have the patent claims
dismissed without prejudice. I deny Plaintiff’s requests.
Plaintiff indicates that I advised it that if it wishes to proceed to trial on May 4, 2015,
it could voluntarily withdraw the patent infringement claims. This is accurate to a degree,

but I did not address at the hearing on February 26, 2015, how the patent claims should be
withdrawn (i.e., by motion or notice) or whether the claims would be dismissed with or
without prejudice. As Defendants correctly point out, Fed. R. Civ. P. 7(b)(1) states that all
requests for a ruling or an order must be made by motion. Thus, Plaintiff’s notice seeking
an order of dismissal without prejudice of the patent infringement claims is improper.
Moreover, Rule 41(a) does not apply to dismissals of less than all the claims in an action;
instead, the Tenth Circuit has indicated the analysis should proceed under Rule 15. See
Predator Int’l, Inc. v. Gamo Outdoor USA, Inc., 2010 WL 3630118, *3 (D. Colo. 2010)
(citing Gobbo Farms & Orchards v. Poole Chem. Co., 81 F.3d 122, 123 (10th Cir. 1996)).
Plaintiff failed to move to amend under Rule 15, and did not confer with defense counsel
as required under D.C.COLO.LCivR 7.1(d) before filing what essentially amounts to a
motion.
Defendants state that if Plaintiff had conferred with them, they would have
proposed (1) their stipulation to another amended complaint to remove the patent claims if
Plaintiff agreed to dismiss those claims with prejudice; (2) provided that, Plaintiff would
stipulate to an entry of judgment on Defendants’ counterclaims of non-infringement; and
(3) Plaintiff would stipulate to an entry of declaratory judgment on Defendants’
counterclaims that the patents-in-suit are and have been invalid ab initio. Thus,
Defendants clearly do not agree to the dismissal without prejudice of the patent
infringement claims, and note that even if those claims were dismissed, the noninfringement and invalidity counterclaims would still be present as to the patents-in-suit.
Their presence creates a problem with Plaintiff’s request for dismissal of the patent
infringement claims and its request that the trial date not be vacated. They

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may also create a problem for Plaintiff in terms of the undeveloped nature of its patent
claims.
In light of the foregoing, I am convinced that Plaintiff’s request in its Notice to
dismiss the patent infringement without prejudice should be denied. Since the claims have
not been properly developed, the May 4, 2015 trial date and the Final Trial Preparation
conference set April 16, 2015, are vacated. The parties are directed to contact Magistrate
Judge Wang for a scheduling conference by Monday, March 16, 2015, regarding the
patent claims and counterclaims. Magistrate Judge Wang is advised to use the Pilot
Program Implementing Proposed Local Patent Rules as a guideline for the development of
the claims.
It is therefore
ORDERED that Plaintiff’s requests in its Notice of Withdrawal of Patent
Infringement Claims and Election to Proceed to Trial (ECF No. 205) to dismiss the patent
infringement with prejudice and proceed to trial on May 4, 2015, are DENIED. It is
FURTHER ORDERED that the eight day jury trial set to commence on May 4, 2015
and the Final Trial Preparation conference set April 16, 2015, at 11:00 a.m. are
VACATED. Finally, it is
ORDERED that the parties are directed to contact Magistrate Judge Wang by
Monday, March 16, 2015, for a scheduling conference regarding the patent claims.
Dated: March 9, 2015
BY THE COURT:
s/ Wiley Y. Daniel
Wiley Y. Daniel
Senior United States District Judge

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